A Balancing Act: Fair Use and Creative Content By Richard Parke, Ben Natter and Jessica Sblendorio

Conventional wisdom, in the trademark arena, has law allows them to stop others from using such marks to been that a party who wishes to use another's trademark prevent the public from being confused about the source must first obtain a license. In recent years, a trend ap­ of corresponding goods or services. These rights, howev­ pears to be emerging in the entertainment industry where er, cannot halt non-infringing use of another's trademark; such use will occur without a party preliminarily seeking one such subset of permissible conduct is known as fair express consent. The same is true in the related area of life use. There are two types of "fair use": Descriptive and story rights. This'new trend demonstrates that entertain­ nominative. Descriptive fair use is a statutory protection, ment industry actors are taking a more aggressive ap­ codified in the Lanham Act,9 while nominative fair use proach to using other's intellectual property, putting them is a judicially created defense. Either is relevant here, be­ potentially at odds with the owners of those rights, whose cause this is a principal argument upon which filmmakers objectives are to police and protect their brands with the and producers rely to use these marks without "paying to public. The justification upon which industry actors rely play." is that using these rights falls under the fair use defense, which excuses the lack of express authorization to use an 1. Descriptive Fair Use owner's trademarks or life story rights. The owners of Federal trademark law recognizes a defense to trade­ these brands or rights, however, may employ their own mark infringement where the mark is used "fairly and aggressive measures to combat this trend, to control and in good faith ... to describe the goods or services of such protect these rights. party, or their geographic origin."10 Known as the de­ scriptive fair use defense, it "in essence, forbids a trade­ An example of this is illustrated by HBO's use of Na­ mark registrant to appropriate a descriptive term for his tional Football League (NFL) trademarks and logos in the [her or its] exclusive use and so prevent others from ac­ show Ballers, which stars Dwayne Johnson.1 Many were curately describing a characteristics of•their goods."11 This surprised when news spread that HBO was not paying defense "is available only in actions involving descriptive licensing fees to the NFL for depicting its logo and team terms and only when the term is used in its descriptive uniforms. 2 The cable series began with Johnson's charac­ sense rather than its trademark sense."12 For example, in ter, Spencer Strassmore, having flashbacks from his play­ Zatarains, Inc. v. Oak Grove Smokehouse, the United States ing days for the Miami Dolphins.3 He was wearing what Court of Appeals for the Fifth Circuit found that the term clearly appeared to be a Dolphin's uniform, with the logo "Fish-Fri" was a descriptive term relating to the prepara­ in plain view-and was chasing down the Buffalo Bills tion and consumption of fried fish and could be used by a quarterback, whose helmet logo was also visible.4 competitor as a descriptive term for similar products.13 Some industry insiders assumed that the NFL would take action against HBO, and that HBO would eventually 2. Nominative Fair Use have .to pay the NFL for using the various team logos and Though not codified in the Lanham Act, the nomina­ uniforms; they were astonished to see a company taking tive fair use defense was recognized as a judicial carve­ on the NFL in such a way.5 Previously, producers who out in New Kids on the Block and addresses circumstances used NFL team logos and uniforms in their vehicles first where no descriptive term may exist: entered into licensing agreements with the NFL.6 This, of With many well-known trademarks, such course, required paying licensing fees.7 HBO responded as Jell-0, Scotch tape and Kleenex, there to the publicity surrounding its actions by stating: "HBO is always mindful of other intellectual property owners, are equally informative non-trademark words describing the products (gelatin, but in this context there is no legal requirement to obtain cellophane tape and facial tissue). But their consent."8 While there have already been analyses of HBO's decision, this article discusses instances (includ­ sometimes there is no descriptive sub­ stitute... when many goods and services ing Ballers) where the "fair use" defense could apply to are effectively identifiable only by their similar conduct, and how arguments are being used in the trademarks. For example, one might refer conflict over clearing-or not-of life story rights. to "the two-time world champions" or I. Fair Use and Trademarks "the professional basketball team from Chicago," but it's far simpler (and more The use of noteworthy brands or trademarks is likely to be understood) to refer to the commonplace in fictional realities, with television, film, Chicago Bulls. In such cases, use of the advertising, and video games being exemplars. Owners trademark does not imply sponsorship or of these "brands," or trademarks, have a bona fide and endorsement of the product because the legally recognized interest in protecting their marks; the

NYSBA Entertainment, Arts and Sports Law Journal I Summer 2017 I Vol. 28 I No. 2 35 mark is used only to describe the thing, content or source of the work?26 As this article focuses rather than to identify its source.14 on television series and movies using third-party trade­ marks, whether the use of these marks is legal or defen­ Circumstances involving nominative fair use generally sible also raises the tension inherent in First Amendment occur when a defendant has intentionally used the plain­ considerations and trademark protections for owners. In tiff's mark to refer to the plaintiff but does not designate 15 some cases, if litigation is pursued, the Rogers test could the source of the defendant's own products or services. be an important part of whether the use of this mark by A defendant must satisfy three requirements to use the an alleged infringer has constitutional protections. defense: Ill. The Use of Professional Sports League 1) the plaintiff's product or service in question must be one not readily iden­ Trademarks in Film and Television: A Fair tifiable without use of the trademark; 2) Use? only so much of the mark or marks may A prominent example of an entity that resolutely be used as is reasonably necessary to protects its brand is the NFL. As just one illustration of identify the plaintiff's product or service; this, during the 2017 Super Bowl, U.S. Immigrations and and 3) the user must do nothing that Customs Enforcement (ICE), U.S. Customs and Border would, in conjunction with the mark, Protection (CBP), and the NFL engaged in "Operation suggest sponsorship or endorsement by Team Player."27 The ICE newswire stated that "enforce­ the trademark holder.16 ment actions led by Homeland Security Investigations A 2004 Supreme Court decision, KP Permanent Make­ (HSI) resulted in the seizure of over 260,000 counterfeit Up, Inc. v. Lasting Impression, Inc.,17 cast doubt on the sports-related items worth an estimated $20 million, and continued availability of nominative fair use as a defense, joint investigative efforts led to 56 arrests with 50 con­ even though the case involved a descriptive fair use victions."28 NFL Vice President of Legal Affairs, Delores defense, because the ruling "calls into question whether DiBella, responded to questions about the seizure at a the nominative fair use defendant would have the burden joint press conference by stating that "the NFL is proud to of negating sponsorship or endorsement confusion with continue its work with ICE, the IPR Center, and law en­ the trademark owner."18 Yet even with that consideration forcement departments throughout the country to protect fans and consumers who are seeking an authentic NFL in mind, the concept of nominative'fair use allows for the 29 comparative advertising, parody, and noncommercial use experience during the celebration of Super Bowl LI." 19 of trademarks. The NFL's brand protection efforts go beyond apparel and merchandise, extending to how the NFL is portrayed II. Trademarks and the First Amendment in the media. The NFL persuaded ESPN to stop airing At their core, trademarks are considered to be com­ Playmakers, one of that cable network's most viewed mercial speech.20 As the First Amendment allows for shows. Playmakers depicted the lives of the Cougars, a fic­ significant regulation of commercial speech, constitu­ tional professional football team that was part of a larger tional issues do not typically arise in trademark disputes. organization only referred to as "the League."30 In 2004, However, this analysis changes for creative works, such New York Times reporter Richard Sandomir wrote that as plays, televisions shows/series, films, books, video then NFL commissioner Paul Tagliabue complained about games, and songs, which are generally sold as commercial ESPN's Playmakers series to Michael Eisner, chief officer products.21 When a mark is being employed as a creative of the Walt Disney Company.31 Although the series had use, rather than a descriptive or commercial one, First both high viewership and strong reviews, Playmakers was Amendment considerations become part of the analysis. canceled after just 11 episodes because of pressure from Creative works are protected as free speech under the the NFL, which disliked the portrayal of players' lives First Amendment, and because these types of works in off the field.32 The NFL made it clear to ESPN that NFL the trademark context contain both artistic expression executives and team owners did not want (or appreciate) and commercial promotion, a different analysis applies.22 the negative depiction of players in Playmakers. Part of the Accordingly, a balance must be struck between the trade­ calculus behind ESPN's decision over whether to chal­ mark owner's rights and the First Amendment rights tied lenge the NFL's demand to stop airing Playmakers was the to creative works.23 fact that the network's most watched show was "Monday Night Football" -and the rights to broadcast those games The leading judicial authority on balancing these in­ emanated from the NFL.33 ESPN's profits, from a pure 24 terests is Rogers v. Grimaldi, a case from the United States number standpoint, have declined in the past few years,34 Court of Appeals for the Second Circuit, which involved 25 which might have in fact raised the value of the NFL deal a film about cabaret performers. The Rogers test has two (which expires in 2021) and relationship for ESPN.35 prongs: 1) whether the use of the third-party trademark has artistic relevance; and 2) if there is artist relevance, HBO, on the other hand, has no such relationship is the use of the mark deliberately misleading as to the with the NFL. In the episodes of Ballers, "NFL players"

36 NYSSA Entertainment, Arts and Sports Law Journal I Summer 2017 J Vol. 28 J No. 2 are shown going to clubs and struggling with financial attention to what many have labeled a serious health and problems. The NFL likely would prefer that these sorts safety issue affecting many professional football players. of experiences not be aired on a platform as popular as Additionally, at the time of Concussion's release, the NFL HBO because of the possible negative impact on the NFL was involved in a class-action lawsuit with former NFL brand.36 Additionally, a spokesperson for HBO stated that players concerning concussion and head-related injuries. in the context of the show Ballers, "there is no legal re­ If the NFL chose to sue Sony for trademark and copyright quirement to obtain [the NFL's] consent."37 What, then, is infringement, it might have risked further tarnishing of its HBO's argument to justify its use of the NFL's logos and brand with the public during a period when the NFL was trademark without a license? The answer is fair use. As set already experiencing bad publicity from these lawsuits. forth earlier, fair use provides an affirmative defense that a defendant can use in a trademark infringement or dilu­ The fair use defense may also apply to the unsanc­ tion case. The defense allows the general public to use the tioned use of marks in documentaries. 'IWo relatively protected trademark as long as the primary meaning of recent documentaries relating to the National Hockey the descriptive mark is being used in good faith.38 HBO's League (NHL) are The Last Gladiators (2011) and Ice Guard­ 43 position surely is that it is using the primary meaning of ians (2016). Both focus on the role of "enforcers," the the marks, as Ballers depicts the NFL uniforms as they hockey players whose job it is to fight anyone from an opposing team who tries to hurt one of their teammates. appear, and is acting in good faith and offering realistic portrayals, rather than disparaging or tarnishing the Each documentary uses actual footage from NHL games trademark and logos. and portrays NHL logos throughout, and it is not evident that either documentarian had express permission from Ballers and Playmakers both provide examples of the NHL to use its logos or footage. In a video interview where the networks producing the shows did not seek posted on the NHL's website, Kelly Chase explains that or obtain a license from the NFL before using its logos the creators of Ice Guardians were careful in how they por­ and trademarks. In the case of Playmakers, while the team trayed the game and players so as to not antagonize the names were fictional and the overall organization was re­ NHL, strongly suggesting that the people associated with ferred to "the League," the NFL appears to have viewed it the film did not officially seek the NHL's permission.44 as a thinly veiled version of the actual NFL. In any event, These filmmakers could make a similar argument as that the NFL did not like the way players and the organization available to Sony for Concussion, namely, that they had no were being portrayed and wanted to protect its brand and obligation to obtain express authorization from the NHL control the associated rights. insofar as their use of NHL intellectual property was both necessary to portray the story accurately and not misrep­ However, in cases where a show or film finds it neces­ resentative of the NHL. These and like positions would sary to use trademarks-and opts to do so without first most likely qualify as fair use defenses. securing authorization-to tell a story, and the intent of that story is meant to be positive, that could well affect In response to this more aggressive approach of whether the intellectual property rights owner seeks legal television producers and filmmakers using these materi­ action. For example, Sony did not seek permission from als, many sports leagues have created their own networks the NFL to use its logos or actual footage in the movie and are producing their own movies. If this "trend" con­ Concussion.39 That film, which starred Will Smith, con­ tinues, leagues such as the NFL and NHL may take more cerned a forensic pathologist who fought the NFL's effort~ stringent measures to protect their marks and brands and to suppress his research on chronic traumatic encephalop­ make it more difficult for producers and filmmakers to athy (CTE) brain degeneration suffered by professional use their marks. football players. If challenged in a legal action, Sony's argument would almost certainly be that using of the IV. Life Story Rights: Are They Necessary? NFL's trademarks was necessary to tell the story precisely The analysis for the life story rights is a similar one, and was protected by the fair use defense.40 Addition­ where the issue of not having express authorization for ally, Sony could argue that the movie only used the NFL's using those rights can implicate a fair use defense. Before marks to identify the teams for which the main character delving into what life story rights are, it is important to played, and only used the mark enough for the audience note the key issue here is the right to publicity.45 What to be able to identify the team or the NFL in the film, thus this encompasses is an individual's right to "control and enhancing authenticity.41 Lastly, Sony did not make it ap­ profit from the commercial exploitation of his or her name pear that the NFL endorsed the movie, nor did it "falsely and likeness, image, or persona. "46 This is not a federal misrepresent" the NFL.42 Taken together, these arguments right, and each state has its own view of what constitutes would form a fair use defense for Sony regarding the "infringement" and "fair use."47 For example, New York presence of the NFL's trademarks in Concussion. classifies using "the name, portrait or picture of any living An important difference between Ballers and Concus­ person" without the person's or his/ her guardian's writ­ ten consent as a misdemeanor48 and also provides equi~ sion is that the intellectual property rights utilized by the 49 latter were meant to have a positive impact by drawing table relief. A violation of a right to someone's publicity can also involve ancillary individuals if a depiction of

NYSBA Entertainment, Arts and Sports Law Journal I Summer 2017 I Vol. 28 I No. 2 37 their names or likenesses was not previously recorded in clearing life story rights. Netflix is currently airing Narcos, a public manner and the filmmakers did not obtain per­ a series that IMDb describes as "(a] chronicled look at the mission to depict these characters in the film.so criminal exploits of Colombian drug lord Pablo Escobar, as well as the many other drug dealers who plagued the The.right to publicity comes into play for clearing life country through the years."62 On July 1, 2016, Roberto story rights. A life story is simply "the things that have 1 Escobar, Pablo Escobar's brother, sent a letter to Netf- happened to someone in life."s Typically, movie studios lix requesting a review of the second season of Narcos, and producers purchase life story rights so that they can because he purported that there were "mistakes, lies have the legal right to depict the events that happened in and inaccuracies from the real story." 63 This letter raised a person's life.s2 Without this permission, movie studios two important issues with respect to life story rights, and authors can be sued for invading the respective namely that Roberto Escobar not only had ownership of individual's right to privacy.s3 In this context, there is a the successor-in-rights for his brother64 and his family conflict between freedom of artistic expression (important name, but he was also a part of the story.6S Based on these to the movie studios and producers) versus freedom of ownership rights, Roberto Escobar sought $1 billion for privacy (important to the private citizen), and a tension the use of his brother's name and likeness on the show. within the First Amendment itself. In times past, the right Mr. Escobar argued that as one of the few survivors of the to privacy prevailed, and clearing life story rights was Medellin cartel and his brother's "closest ally," "nobody a requirement.S4 Traditionally, the major studios always else in the world is alive to determine the validity of the played it safe so that their profits would not decrease by materials, but me" regarding the allegations of the mis­ paying for litigation.ss The difficulty for indie artists­ takes, lies, and discrepancies in season 1 of Narcos. 66 This who are not as well-funded as their major studio counter­ is an example of a situation where a subsequent owner parts-is that obtaining a life story license can be expen­ could try to influence the clearing of life story rights and sive, particularly depending on whose "life" is being potentially affect the airing of a show by raising issues of purchased.s6 Furthermore, these agreements are not really accuracy and the like. about acquiring an underlying right, because the facts of the person's life are in the public domain, but rather serve Additionally, Roberto Escobar was both his brother's to waive certain personal rights.s7 For these reasons, it is accountant in the Medellin cartel and the head of his sometimes easier to proceed without obtaining a life story hitmen; he wrote a book about Pablo Escobar's drug rights agreement.SB empire in 2009, entitled The Accountant's Story: Inside the Violent World of the Medellin Cartel.67 Yet Roberto Escobar 1. Case Study: Equinox Films and Winnie is neither directly depicted in the show-it portrays an Mandela accountant who is fired and claims to have been a CIA In 2011, Equinox Films made a movie about Winnie informant-nor ever appears in the show. 68 Had Roberto Mandela, the wife of Nelson Mandela, starring Jennifer Escobar been portrayed in the series or the details regard­ Hudson and Terrence Howard. Equinox Films based the ing his "portrayed character" were based upon his book, film on the biography, Winne Mandela: A Life, by Anne then this would potentially raise issues as to whether Marie du Preez Bezrob, and obtained the rights to the Netflix would need to obtain the life story rights or the book. The filmmakers did not, however, obtain Ms. Man­ rights to Roberto's Escobar's book before using his name, dela's life story rights.s9 Ms. Mandela openly criticized likeness, and stories on Narcos. the movie and filmmakers for not obtaining her permis­ sion and ·"delving only superficially into her life story.1160 3. Case Study: Chuck Wepner and Rocky She stated, "I was not consulted. I am still alive, and I Even where years have passed since the alleged un­ think that it is a total disrespect to come South Africa, sanctioned use of life story rights, the subject of another's make a movie about my struggle, and call that movie creative efforts may still be able to interpose a cause of ac­ some translation of a romantic life of Winnie Mandela."61 tion for violating one's right to publicity. This is precisely While there was no litigation, Equinox Films arguably what Charles "Chuck" Wepner did. Known as the "Bay­ would not have needed to obtain the life story rights onne Bleeder,"69 Mr. Wepner was the heavyweight boxer because Winne Mandela, as both Nelson Mandela's wife who purportedly served as the inspiration for the iconic and a powerful individual in her own right, lived in the Rocky Balboa movie character. public arena. Furthermore, as the filmmakers based the film upon book rights they already had, and unless the Chuck Wepner fought some of boxing's biggest heavyweight names during his career, including Sonny film was based on works outside the book or a mischar­ 70 acterization of Ms. Mandela's life, Equinox Films would Liston and George Foreman. The Bleeder's most note­ likely have a defense of fair use for the film. worthy fight was his 1975 title shot against Muhammad Ali, which a young Sylvester Stallone admittedly watched 2. Case Study: Narcos and Roberto Escobar on television.71 Don King, the fight promoter, had offered Mr. Wepner $100,000 to challenge Muhammad Ali for the As noted above, ancillary characters or subsequent heavyweight title; Wepner noted that "Ali said he need an owners of life story rights may also invoke issues with easy fight after [George] Foreman... and figured he would

38 NYSBA Entertainment, Arts and Sports Law Journal I Summer 2017 I Vol. 28 I No. 2 cut me up[.] ... But I had a shot to win a title against the sage from the person upon whom the character is based most famous man in the world." 72 or the successive owner of the life story rights. The fight was neither quick nor easy for Ali, shocking It is also important to note what effect publicity could him and the sporting world. In the ninth round, Wepner have on the film. If the production is portraying a mes­ unexpectedly knocked "The Champ" down73 and, despite sage that is positive to a: significant part of the viewing retaliatory pummeling from a roused Ali, made it to the audience, arguably what the movie Concussion sought fifteenth and final round before losing by a technical by highlighting a health and safety issue for profes­ knockout with 19 seconds left.74 sional football players, then the trademark owner may be reluctant to assert its rights and potentially draw more Rocky debuted the next year. Sylvester Stallone wrote, attention to the artistic vehicle. Yet in a different context, directed, and starred in the film, which spawned a seven­ not having appropriate clearance can result in negative movie franchise75 and achieved celluloid immortality by publicity. For example, Winnie Mandela's public criti­ winning three Oscars, including Best Picture (it was also cisms about the film and its makers for not obtaining her the highest grossing film of 1976).76 After the movie's re­ permission and for "delving only superficially into her lease, word seeped out that Mr. Wepner had supposedly life story''83 were less than optimal from the filmmaker's been the inspiration for Rocky Balboa. In fact, Wepner perspectiveb and may well have kept away patrons who himself admitted lying to others that he had been paid for might have purchased tickets at the box office but for her life rights because he "was upset about [not being com­ recriminations. pensated] and had a lot of pride."77 While Mr. Stallone of­ fered Mr. Wepner a role in the sequel, Wepner admits that Although HBO is not the subject of a lawsuit from the he was having personal issues, including heavy partying NFL for not securing authorization for Ballers, its failure and drug issues, that precluded his involvement.78 to obtain consent and licensing from the NFL carries some level of risk-which still exists as of the publication of this After apparently ruminating for many years, in 2003 article. Even though obtaining express authorization to Mr. Wepner sued Mr. Stallone, alleging a continuous and use trademarks, logos, and life story rights is not always ongoing violation of the farmer's rights of publicity-or necessary, it is likely a more pragmatic approach that may life story rights.79 The Complaint contended that Mr. Stal­ shield content creators from future complication and ex­ lone had called Mr. Wepner several months after the Ali pense, allowing them to focus on what drove them in the fight to inform him of a script that Mr. Stallone had writ­ first place-their creative endeavors. ten three days after being "inspired" by that fight.80 The Complaint further alleged that Mr. Stallone had used Mr. Wepner's name to promote the Rocky movies and associ­ Endnotes ated products.81 Though Mr. Wepner sought $45 million l. Dwayne Johnson's rise to fame began in the professional wresting in damages, the suit settled in 2006 for an undisclosed world, where he was known as "The Rock." He leveraged that to sum.82 work in big-budget films, including The Scorpion King, Hercules, and The Fast and the Furious franchise. Johnson played football at The time gap between the initial act that purportedly the University of Miami until a back injury cost him a spot playing professionally in the NFL. Dwayne Johnson, http://www. formed the basis for the injury and the eventual suit was biography.com/people/ dwayne-johnson-11818916 (last visited on abnormally long here, occasioned in part by the decades­ Apr. 28, 2017). long success of the Rocky franchise. That notwithstanding, 2. Mike Florio, New HBO series uses NFL team names, logos without Mr. Wepner's story provides yet another example of how NFL consent, NBC SPORTS: PRO FOOTBALL TALK (June 7, 2015, 9:51 troublesome the failure to clear life story rights can be to PM), available at http:/ /profootballtalk.nbcsports. the entertainment vehicle's maker. com/2015/06/07/new-hbo -series-uses-nfl-team-names-logos­ without-nfl-consent/. V. Conclusion 3. Jason Guerrasio, Here's why The Rock's new HBO show, 'Ballers,' can legally use NFL logos without the league's consent, BUSINESS INSIDER Studios are increasingly relying on the fair use doc­ (June 19, 2015, 11:44 AM), available at http:/ /www.businessinsider. trine in connection with use of content in film to portray com/why-the-rocks-ballers-can-use-nfl-logos-without­ consent-2015-6. a story accurately, and are less inclined to seek licenses or consent to use trademarks in films, television series, 4. Id. or documentaries. This trend may force owners of intel­ 5. Id. lectual property to be more creative in protecting their 6. Aaron Gordon, PLAYMAKERS, THE SHOW THE NFL KILLED respective rights and brands. One solution may be for an FOR BEING TOO REAL, VICE SPORTS (April 22, 2015), available at https:/ I sports.vice.com/ en_ us/ article/playmakers-the-show-the­ affected entity, such as the NFL, to reach out and work nfl-killed-for-being-too-real. directly with filmmakers to control the process of how its 7. Id. brand is used or depicted. This approach may ~so be ap­ plicable in the life story rights context, as having a source 8. Oliver Herzfeld and Tal Benschar, HBO's Ballers: Touchdown or Legal Fumble?, FORBES (June 17, 2015, 9:56 AM), available at https:/ /wyvw. that can aid in correctly portraying a character will almost forbes.com/ sites/oliverherzfeld/2015 /06/17/hbos -ballers­ certainly provide a more powerful and "endorsed" mes- touchdown-or-legal-fumble/#lb9e4ca45340.

NYSBA Entertainment, Arts and Sports Law Journal I Summer 2017 I Vol. 28 I No. 2 39 9. The Lanham Act, also known as the Trademark Act of 1946, is the viewership, dragged down results in cable TV-which is by far federal statute governing trademarks, service marks, and unfair Disney's largest business. With the highest subscriber rates in pay competition. Congress passed it on July 5, 1946, and President TY, Disney's sports network is especially at risk of losing revenue Harry Truman signed it into law. as cable audiences cancel subscriptions for online services or sign 10. 15 u.s.c. § 1115(b)(4) (2012). up for so-called skinny bundles that don't play up sports programming."). 11. New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 306 (9th 35. Sandomir, supra note 30. Cir. 1992) (internal quotations and citation omitted). 36. Mark Wahlberg, a well-known actor (e.g., Lone Survivor, Boogie 12. Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791 (5th Nights, The Fighter), is also an executive producer for Ballers. Cir. 1983), overruled in part by KP Permanent Make-Up, Inc. v. Lasting Wahlberg stated on a sports radio show that he had received Impression I, Inc., 543 U.S. 111 (2004). compli}ints about the HBO series in calls from NFL Commissioner 13. Id. Roger Goodell and team owners. NFL Senior Vice President of 14. New Kids on the Block, 971 F.2d at 306. Communications Natalie Ravitz has denied those allegations on Twitter. Interestingly, many NFL players have appeared on the 15. J. David Mayberry, Trademark Nominative Fair Use: Toward a Uniform show in celebrity cameos. Aurelie Corinthios, Mark Wahlberg Standard, 102 THE TRADEMARK REP. 820, 820 (May-Jun. 2012). Claims the NFL and Various Team Owners Have Complained About 16. Tamera H. Bennett, Is That Fair (Use)? Third Party Trademarks in HBO's Ballers, PEOPLE-TV WATCH (Jul. 18, 2016, 1:05 PM), Film, Print, Video Games and other Media, CREATE PROJECT BLOG available at http:/ /people.com/tv /mark-wahlberg-claims-nfl­ (Jan. 12, 2015), available at http:/ /www.tbennettlaw.com/ complained-about-hbos-ballers I. createprotect/2015/1/5/is-that-fair-use-third-party-trademarks­ 37. Herzfeld and Benschar, supra note 8. in-film-print-video-games-and-other-media (citing E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 444 F. Supp.2d 1012, 1029 (C.D. 38. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, Cal. 2006)). 122 (2004). (The Supreme Court also noted that the risk of consumer confusion does not prevent the fair use defense from 17. 543 U.S. 111 (2004). being used, as there will always be some degree of confusion. 18. Mayberry, supra note 15, at, 820-21. What is relevant is the extent of consumer confusion in assessing 19. Bennett, supra note 16. whether a defendant's use of the trademark is objectively fair.). 39. Will Brinson, 20. David M. Kelly and Lynn M. Jordan, Twenty Years of Rogers v. Sony didn't bother asking NFL for rights to use footage in Grimaldi: Balancing the Lanham Act with the First Amendments Rights 'Concussion,' CBS SPORTS (Dec. 23, 2015), available at http:/ /www. ofCreators ofArtistic Works, 99 THE TRADEMARK REP. 1360, 1360 cbssports.com/nfl/news/sony-didnt-bother-asking-nfl-for-rights­ (Nov.-Dec. 2009). to-use-footage-in-concussion/; see also Travis Stegemoller, No I.P. Challenge Flag for "Concussion" Movie, THE GUIWEIN BLOG, HTTP:// 21. Id. at 1360-61. INFO.GU1WEINLAW.COM/BLOG/IP-AND-CONCUSSION-MOVIE (noting 22. Id. at 1361; see also Bennett, supra note 16. that Sony President, Tom Rothsman, confirmed in a series of interviews on sports talk radio that Sony did not have express 23. See, e.g., Kelly and Jordan, supra note 20, at 1361. authorization from the NFL to use its marks). 24. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). 40. Stegemoller, supra note 39. 25. Screen legend Ginger Rogers sued Alberto Grimaldi and MGM for 41. Id. producing and distributing Federico Fellini's film Ginger and Fred, which was about two Italian cabaret performers whose dance 42. Id. routine was modeled on the work of Fred Astaire and Ginger 43. Farran Smith Nehme, 'The Last Gladiators' review, NEW YORK POST Rogers. Ms. Rogers alleged that the film infringed her Lanham Act (Feb. l, 2013, 5:00 AM), available at http:/ /nypost. rights, right of publicity, and was a "false light" defamation. See com/2013/02/01/ the-last-gladiators-review/; Kevin Crust, generally Rogers, 875 F.2d 994. Documentan; 'Ice Guardians' makes the case for hockei/s enforcers, Los 26. Bennett, supra note 16. ANGELES TrMEs (Nov. 10, 2016, 5:00 AM), available at http:/ /www. la times.com/ entertainment/ movies/la-et-mn-ice-guardians­ 27. U.S. IMMIGRATIONS AND CUSTOMS ENFORCEMENT, 'OPERATION review-20161107-story.html. TEAM PLAYER' NETS $20 MILLION IN FAKE SPORTS MERCHANDISE, (Feb. 2, 2017), available at https://www.ice.gov/news/releases/operation­ 44. NATIONAL HOCKEY LEAGUE (NFL), Chase on Ice Guardians (Oct. 31, team-player-nets-20-million-fake-sports-merchandise#wcm­ 2016), available at https:/ /www.nhl.com/video/chase-on-ice­ survey-target-id. guardians/ t-277350912/ c-45866403. 28. Id. 45. Diane Krausz, Whose Life Is It Anyway? Clearance ofLife Ston; Rights in Film, NYSBA: THE ENTERTAINMENT, ARTS AND SPORTS LAW 29. Id. BLOG (Sept. 8, 2012, 3:32 PM), available at http:/ /nysbar.com/ 30. Richard Sandomir, PRO FOOTBALL; Citing N.F.L., ESPN Cancels blogs /EASL/2010I 09 /whose_life_is_it_anyway_cleara.htm l. 'Playmakers,' N.Y. TIMEs, (Feb. 5, 2004), available at http:/ /www. 46. Id. nytimes.com/2004/02/05/sports/pro-football-citing-nfl-espn­ cancels-playmakers.html?_r=O. 47. Id. 31. Id. Mr. Sandomir also reported: "Jeffrey Lurie, the owner of the 48. N.Y. CN. RIGHTS LAW§ 50 (LexisNexis 2017). Philadelphia Eagles, told The Philadelphia Inquirer last year, 'How 49. N.Y. CN. RIGHTS LAW§ 51 (LexisNexis 2017). would they like it if Minnie Mouse were portrayed as Pablo 50. Krausz, supra note 45. Escobar and the Magic Kingdom as a drug cartel?"' Id. 51. Life Ston;, MEIUUAM-WEBSTER (online), available at https:/ /www. 32. Id. merriam-webster.com/ dictionary /life%20story. 33. Gordon, supra note 6. 52. Lisa Califf, To Acquire or Not to Acquire Life Rights for a Movie, 34. See Christopher Palmeri, Disney Sales Fall as ESPN Troubles Drag LAw360 (Jun. 22, 2015, 10:28 AM), available at https:/ /www.law360. Down Cable TV Profit, BLOOMBERG, (Feb. 7, 2017, 4:36 PM), available com(articles I 665781 Ito-acquire-or-not-to-acquire-life-rights-for-a­ !lt https:/ /www.bloomberg.com/news/articles/2017-02-07 / mov1e. disney-sales-fall-as-espn-drags-down-cable-tv-profit ("A decline in 53. Krausz, supra note 45. profit at ESPN, which had fewer college bowl games and lower

40 NYSBA Entertainment, Arts and Sports Law Journal I Summer 2017 I Vol. 28 I No. 2 54. Califf, supra note 52. only other Rocky film to earn an Oscar nomination, that time for 55. Id. Sylvester Stallone as Best Supporting Actor ~he did not ":'in). See IMDB, Creed (2015), available at http:/ /www.nndb.com/title/ 56. Id. tt3076658/. 57. Id. 76. Kaplan, supra note 69. 58. Id. 77. Id. 59. Id. 78. Id. 60. Id. 79. See Complaint, supra note 74. The Complaint also included causes 61. David Smith, Winnie Madikizela-Mande/a 'insulted' by movie about her of action for unjust enrichment and detrimental reliance. The case life, THE GUARDIAN (Jun. 14, 2011, 4:05 PM), available at https:/ / was originally filed in state court and removed to the U.S. District www.theguardian.com/world/2011/jun/14/winnie-movie-insult­ Court for the District of New Jersey for the remainder of the madikizela-mandela./. The producers of the film noted that Ms. proceedings. The federal court docket number was No. 2:03-cv- Madikizela-Mandela's lawyers had written to them threatening 06166. legal action to stop the production, but the producers insisted they 80. Id. at 'j[ 16. would continue with the film. Id. In contrast, Ms. Madikizela­ Mandela did give "her blessing" to an opera based on her life, 81. Id. at 'j['j[ 1-4. Winnie the Opera, in Pretoria. Id. 82. Kaplan, supra note 69. 62. IMDB, Narcos (TV Series 2015), available at http:/ /www.imdb.com/ 83. Califf, supra note 52. title/tt2707408/?ref_=fn_al_tt_l (last visited Apr. 28, 2017). 63. TufayelAhmed, 'Narcos': Pablo Escobar's Brother Wants $1 Billion Richard Parke, a partner at Haug Partners LLP, From Netflix, Slams Actor Wagner Moura, NEWSWEEK (Jul. 7, 2016, 11:52 AM), available at http:/ /www.newsweek.com/narcos-pablo­ has litigated patent cases in a wid,e range of tech­ escobars-brother-wants-1-billion-netflix-slams-actor-wagner­ nologies and has likewise litigated a variety of moura-478451. trademark cases, for large and small clients. He is 64. In 2015, Mr. Escobar registered for successor-in-rights for his also one of the firm's leading experts on adjudicat­ brother and his family name in California, prior to the release of ing or otherwise resolving domain name disputes. the first season of Narcos. Richard routinely counsels clients on multifaceted 65. Ahmed, supra note 63. intellectual property and commercial issues, includ­ 66. Id.; see also Jamil Mustafa, Pablo Escobar's son criticizes Netflix series ing intellectual property procurement and other Narcos for 'insulting the history of a whole nation,' THE TELEGRAPH transactional matters. (Sept. 9, 2016, 5:25 PM), available at http:/ /www.telegraph.co.uk/ news/2016/ 09 /09 / pablo-escobar-son-criticises-netflix-series­ narcos-for-insultin/ (Sebastian Marroquin, Pablo Escobar's son, Ben Natter, a partner at Haug Partners LLP, is posted on Facebook 28 points identifying what he alleged as a skilled attorney whose practice focuses on all "outright lies" regarding his father. The makers of the show said aspects of global trademark strategy, procurement, that while the series is based on Colombia's drug wars, some of the events and characters in the series have been fictionalized for management and enforcement. Ben implements dramatic purposes. This is a second example of where another client-specific approaches for protection of intel­ member of the Escobar family took issue with the characterization lectual property rights around the world. On any of Pablo Escobar in Narcos.). given day, Ben's work will find him enforcing client 67. Ahmed, supra note 63. rights throughout countries spanning the globe 68. Id. with local authorities, courts, and associates. 69. Mr. Wepner earned this moniker after his blood splattered on a reporter sitting ringside during a fight. Michael Kaplan, He went Jessica Sblendorio, an associate at Haug Part- toe-to-toe with Muhammad Ali-and inspired 'Rocky,' NY POST (Apr. ners LLP, focuses her practice on litigation. Her 29, 2017, 4:00 PM), available at http:/ /nypost.com/2017/04/29 I he-went-toe-to-toe-with-muharnmad-ali-and-inspired-rockyI. prior experience encompasses a broad range of areas, including constitutional law, human rights, 70. Id. international law, and international arbitration. She 71. Id. draws upon her experience in both the public and 72. Id. private sectors to apply her knowledge to her cur­ 73. In his storied career, Muhammad Ali had 61 professional fights rent practice. and 56 wins, but was knocked down only four times. The first three-by Sonny Banks, Henry Cooper, and Joe Frazier-were when Ali was a contender. However, the only man to put Ali on the canvas when he held the title was Chuck Wepner. The authors would like to thank Philip George, a law clerk 74. Id. Ali himself later said, "There's not another human being that at Haug Partners LLP, for his assistance in the preparation of can go 15 rounds like that." Id. Complaint, Wepner v. Stallone (N.J. this article. Super. Ct. Civ. Div. Nov. 11, 2003), available at https:/ /www. mandilaw.com/files/ complaint.pdf. The Complaint states that Copyright © 2017 Haug Partners LLP. This article is for leading up to the fight "sportswriters and odds-makers ... all predicted that Ali would win decisively. In fact, some odds-makers informational purposes, is not intended to constitute legal ad­ named Ali as a 30-1 favorite to win the bout in less than three vice, and may be considered advertising under applicable state rounds." Id. at 'j[ 11. laws. This article is only the opinion of the authors and is not 75. The last film in the series (thus far) was 2015's Creed, starring attributable to Haug Partners LLP, or the firm's clients. Stallone and Michael B. Jordan as Apollo Creed's son. Creed is the

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